Tuesday, October 06, 2015

TTAB Test: Is "F**K PROJECT" Scandalous for Handbags and Clothing?

The USPTO refused registration of the mark shown below, for "Leather and imitations of leather; leather and imitation leather goods, namely bags, suitcases, backpacks, traveling bags, purses, key-cases of leather and skins, wallets, briefcases for documents; umbrellas" (in class 18), and "Clothing, namely, T-shirts, shirts, jumpers, trousers, skirts, jeans, jackets, underclothes, bathing suits, hats and caps, footwear" (in class 25), deeming the mark to be immoral or scandalous under Section 2(a) of the Lanham Act. Applicant Giorgio S.R.L. appealed, arguing that "f**k" is an accepted euphemism employed as a substitute for "fuck," the latter being too vulgar for use in written media. How do you think this came out? In re Giorgio S.R.L., Serial No. 79141996 (September 30, 2015) [not precedential].

The Board's opinion includes a main opinion, a concurring opinion, and a dissent, and runs for 22 pages That in and of itself makes this case rather extraordinary. I will hit only the high points here.

Judge Shaw wrote the main opinion, finding the applied-for mark to be immoral or scandalous and thus barred from registration by Section 2(a). Because this is a family blog, I will not repeat the dictionary definitions of "fuck" (you know them anyway), which established that the word "fuck" is considered vulgar and obscene. The examining attorney submitted Internet evidence showing that F**K is commonly used in place of "fuck," Therefore, "the former may be considered equivalent to the latter, particularly in meaning and commercial impression." The asterisks in F**K "serve as a typographical 'fig leaf' to protect readers from the visual vulgarity of the word 'fuck' but the terms are nonetheless equivalents."

Credulity was strained by applicant's argument that the term F**K could refer to an infinite number of socially acceptable words, such as "fork" of "flack." [How about FINK or FOLK? - ed.] Writers use asterisks in the term F**K precisely because the asterisks mask the vulgar appearance of the word 'fuck' in its entirety, while at the same time leaving no doubt in the reader's mind of the meaning."

Judge Adlin concurred, under different reasoning, noting that "if we were writing on a clean slate," he would join the dissent. In cases involving euphemisms or alternative spellings of "bad words," the Board has generally found these terms to be scandalous. He also noted that the PTO has been consistent in refusing registration of marks analogous to F**K PROJECT.

Unless and until a court or a larger panel of the Board adopts a new course in situations such as this, it is not appropriate to disturb the settled expectations resulting from the Office’s prior and relatively consistent treatment of this type of mark.

If serving on a larger panel, however, Judge Adlin would view the evidence as does the dissent. He would not agree that F**K is vulgar, but rather he would find it to be a euphemism used precisely because it is not vulgar. The evidence showed that "public, for-profit websites, and book, movie, and clothing sellers use alternative spellings of 'fuck' in an apparent effort to not offend, or at least to reduce the level of offense arising out of calling to mind the word 'fuck.'"

Judge Seeherman dissented, emphasizing that the mark at issue is not FUCK PROJECT, which she would find scandalous, but F**K PROJECT. The judge did not agree with the conclusion that if a term would be readily understood as offensive, a substitute term is also offensive.

In Judge Seeherman's view, F**K is a non-offensive way of depicting the word FUCK. "F**K is a sanitized version of the vulgar word 'fuck,' but because it is sanitized by the fig leaf asterisks, it should not be treated as being the same as the vulgar word that the fig leaf asterisks are obscuring."

At the very least, the record shows that there is some question about whether "f**k" would be perceived as an offensive or vulgar word, or as a euphemism for the offensive word “fuck.” This is enough to show that there is doubt as to whether the applied-for mark, F**K PROJECT in stylized form, is scandalous and, accordingly, such doubt should be resolved in favor of publishing the mark for opposition.

10 Comments:

When Kinky Friedman was running for Governor of Texas about a decade or so ago he was on a local radio show (after the "wardrobe malfunction" incident) and was reminded, while on air, that he cannot use dirty words while on a live broadcast. He replied, "I will not use fuck in front of a C-H-I-L-D again!"

If there ever was a decision that clearly points out why the Supremes should get a chance to rule on the constitutionality of Section 2(a), this is it. Over the top, beyond the pale, choose your cliche. Talk about going into people's (dirty) minds to make a dirty word out of something that is not dirty without interpretation. How about the mark "F You"? where does it end? "F Y"? I think it ought to end (having come very late to the party) with the supremes finding this section of the Lanham Act unconstitutional. Ironic that the Board's members don't recognize that Bear Bryant's checked hat and the words "Houndstooth Mafia" which clearly points to whoever owns his persona and common law trademark rights do not violate 2(a), but this does?We don't need thought police inserting their political views in determining registrabililty. Way too much subjectivity that can be misused.

The same problem was bounced back and forth in the Office for years with clothing store FCUK (French Connection UK). If the consumer immediately recognizes the F**K as vulgar (which is usually its first common English association) then it is a problem here in the US (maybe not in other geographies though.) Thank you, but no, I join with John in having read enough F-bombs for one session. I agree with the Board to bar registration of this mark. BTW: was "F**K" as a term disclaimed in the application? Should Giorgio SRL have exclusive rights to the term "F**K" for trademark purposes? What about the origin of the goods (ID) - Class 18 and 25 come from "F**K"? Yuck!

What about FUBU and FCUK and the many FUBU and FCUK marks that have been registered? Is it just me, or does the FU in FUBU make one think of F**K YOU? Same with FCUK, doesn't it make you think F**K? Why aren't these addressed in the opinion? Where is the line drawn?

The line is drawn wherever 3 particular members of that particular panel decide to draw the line, Not really a very good "line" because it is blurry as all get out. Phonetic equivalents of non standardized abbreviations because someone could stretch their dirty mind and say "SH*T" doesn't mean "shot' it means.....there is no ending to it, but it begs the larger point. 2a shouldn't be used as the moral and PC police. In my mind it started with someone off the street being offended by O.J. Simpson registering his name and got standing an opinion about 2a and him. Talk about offensive? Look at "Fightin Irish" word mark and the registered logo 1,229,591 of the leprechaun with a scowl and his fists raised in a fighting position. Talk about a negative stereotype (of my grandparents).So where does it end?

Eric Wynalda, former US Men's National Team soccer star, has a new radio program called "WTF" - which stands for Wynalda Talks Football. Wynalda is an American, so Wynalda Talks Soccer may have been more appropriate, but WTS doesn't have the shock value of WTF.

Shucks! Gol durn it to heck! Frack this. Those "bad" word substitutes are already further than anyone should have to go in attempting to mollify the insatiable prudish minority. Its not merely language they wish to control, but forking thought itself. As Orwell said, this is "double plus un-good."